Sweet for one Hershey, bitter for another

If the Hershey Company gets its way, it'll be Sen. Steve Hershey. Hershey Co. recently sued the politician — who is running for re-election — alleging that the latter's brown, rectangular campaign logo with white writing illegally imitates the Hershey Co.'s bar packaging, with its distinctive brown background and silver-and-white writing.

Both use similar lettering for the word HERSHEY, which appears in capital letters in the center of both designs, But where the chocolate bar says "milk chocolate," the politician's logo says "state senate."

Steve Hershey is, well, Steve Hershey. The basic trademark rule pertaining to the protection of personal names as trademarks is that even where a likelihood of confusion is shown, a junior user who uses his own personal name as a trademark receives preferential judicial treatment in the framing of an injunction. As you can imagine, in a typical conflict over the right to use a personal name as a trademark, the junior user will often assert as a defense the argument that everyone should have a right to use his or her own name in business.

This argument is commonly made when members of a family business separate — often as the result of a dispute — and seek to run competing businesses under the same personal name. What is called for in the courtroom is an informed and thoughtful balancing between competing policies: On the one hand is the senior user's trademark rights acquired through the acquisition of a secondary meaning, and the protection of the public from confusion; on the other is the junior user's equitable claim to be able to use his or her own name as a mark in their business.

In modern law, the argument that one has a right to use one's own name often results in some accommodation in the framing of an injunction against the junior user’s use, or a settlement that balances the senior user's trademark rights against the junior user's right to use his or her own name in some fashion without significant confusion or deception of customers. If the use of the name is considered confusing, a junior user is often required to modify to some extent his or her present usage. Modifications ordered often include the inclusion of the defendant’s first name or initials; a change in the style, size or color of the lettering of the personal name; the inclusion of some clarifying matter; and/or the use of a disclaimer of any connection with plaintiff.

In the case of the Maryland senator's campaigning, Hershey Co. would probably be satisfied if Mr. Hershey changed the style and color of the complained of materials. As the Hershey Co. has explained, the company does not object to the use of the HERSHEY name or to any of the senator’s political communications. However, Hershey Co. does object to the senator’s blatant attempt to use the fame and equity that Hershey Co. has built in its trade dress to draw more attention to his campaign.

Making matters worse, according to Hershey Co., the senator is also falsely suggesting that the company has sponsored, endorsed, authorized or otherwise is associated with Senator Hershey, his campaign, or his campaign’s fundraising efforts, when such is not the case. Thus, Hershey Co. has a two-pronged complaint. First, the company argues that the senator is using Hershey Co.’s distinctive trade dress to draw attention to his signs; and, second, he is suggesting that Hershey supports him, when that is not the case.

And it's not the first time. In several previous cases, courts have examined the past behavior of the parties in attempting to determine in whose favor the balance between rights-holder and personal name user is achieved. If that happens in this case, the senator may end up with a bitter taste in his mouth. Hershey and the senator have had numerous disputes over these similar issues since 2002. The Hershey Co. says in its complaint that the dispute dates to 2002, when Sen. Hershey was running to be a county commissioner and used similar tactics in presenting his name in campaign materials.

Hershey Co. says it allowed the senator to finish out his 2010 campaign by allowing him to keep the materials for that race, but required that he promise not to do so again in the future. They learned what readers already well know: politicians have a tough time keeping campaign promises. Hershey Co. claims that the senator violated their former agreement by bringing back the offending design for his most recent campaign. Thus the renewed protests from Hershey.

In his defense, unsurprisingly, the senator has stated that Hershey’s allegations raise serious questions about his constitutional rights of freedom of speech, freedom of association, and participation as a candidate in the political process. Sen. Hershey argues that his most recent sign design, which he describes as using his surname in a common font while tying in a visual representation of the Maryland state flag is a fair compromise. It will be interesting to learn whether the court agrees.

Adding an interesting diversion to the case, the senator states that he's been told his family tree intersects that of Milton S. Hershey, the candy company's founder, but that they are not close relatives.

The federal district court, on July 17, issued an injunction against Sen. Hershey’s signs. The injunction is not a final ruling on the merits, but instead, is intended to protect Hershey’s rights as the parties continue to dispute the matter on the merits. In the end, it will be interesting to see if Hershey’s attempt to target the signs because of their alleged similarity to Hershey’s trade dress will allow it to avoid the senator’s anticipated use (again) of the defense that he's simply using his personal name. Either way, for one litigant the outcome will be less than sweet.